Can Basketball Stripes Pattern Be Registered as 3D Trademarks ?

Israel, October 26, 2022.

Is it possible to register stripes pattern on basketball as 3D trademarks ? A recent decision of the Israeli Trademark Commissioner addressed this question.

KABUSHIKI KAISHA MOLTEN has filed a trademark application for stripes pattern on basketball in class 28 for basketballs and toys:

The trademark office refused the application for lack of distinctive character. 

According to the applicant, the requested pattern has acquired distinctive character through extensive market use, and is therefore eligible for registration.

The Applicant requested a hearing. 

The Trademark Commisioner, Dr. Ravia Israeli, was requested to decide whether stripes pattern on basketball eligible for registration as a 3D trademark.

The trademark commissioner ruled that the requested mark is a position mark, part of a product’s shape and design, therefore it bears a higher burden of proof.

The Trademark Commissioner has decided to follow the EU regulations regarding  position marks: 

“The factors to be taken into account when examining shape marks are also relevant for position marks. In particular, the examiner must consider whether the relevant consumer will be able to identify a sign that is different from the normal appearance of the products themselves. A further relevant consideration in dealing with position marks is whether the positioning of the mark upon the goods is likely to be understood as having a trade mark context.”

In other words, the consumer’s perception must be examined in relation to the design of the products in the relevant field, and whether the consumer will recognize the source of the goods when he notices the design that constitutes the requested mark.

The Applicant’s Stripe Pattern Lacks an Inherent Distinguishing Character

The trademark Commissioner has decided that the design of the applicant’s basketball is not unusual, unique or surprising in relation to designs in the field.

The design of the requested mark based on the pattern of the applicant’s stripes or the location of this design on the basketball does not constitute an independent element capable of directing the reasonable consumer in the field to the applicant. Therefore, it was decided that the mark lacks an inherent distinguishing character.

 Has the applicant’s stripe pattern acquired a distinctive character ?

As a general rule, when coming to decide on the question of the acquisition of a distinctive character, one must examine the period of use of the mark, the degree of publicity it received and the effort invested by the owner of the mark in establishing a relationship between the product and the manufacturer.

Volume of sales is not enough to necessarily create the required connection between the mark and the origin of the goods.

The applicant has submitted sufficient evidence to prove a substantial market share, but applicant has failed to demonstrate that the totality of the evidence shows that the pattern of stripes on the applicant’s balls has acquired a distinctive character and is identified with the applicant as the source of the goods.

“I did not find that the presentation of the image of the basketballs, which bear the applicant’s striped pattern, in the various publications, turns the design in question into a trademark of a distinctive nature eligible for registration.

On the products presented in the publications, the applicant’s name “Molten” appears next to its stripe pattern. Therefore, it cannot be determined that the stripe pattern without the accompanying name “Molten” next to it acquired a distinctive character …”

Therefore, the application for the stripes pattern as a three-dimensional mark ( 3D Trademark) (as a shape of a product) was denied.

At the same time, the requested mark in its two-dimensional form (the circle mark) is eligible for registration and will be recorded in the register with the addition of a disclaimer stating that this registration does not grant the applicant an exclusive right to the three-dimensional image of the ball and the pattern of stripes imprinted on it.

The meaning is that the stripes may be protected as a standalone trademark but not as a shape or design of a product.


Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever. 



Summary of 2021 Israel Trademark and Patent Office Report

Check Out the Latest Trademark Filing Statistics in Israel 2016 – 2021

1.      National trademark applications (3%) and international applications (14%) both increased in 2021.

2.      A total of about 9% more applications have been filed this year than the previous year.

3.      The number of applications submitted this year (2021) is the highest ever.

4.     48% of all trademark applications filed in Israel were national applications filed by local attorneys, which means trademark attorneys from other countries still prefer to file their trademark applications using local attorneys after seeking advice and counsel from local attorneys.

5.      Approximately 75% of trademark applications filed each year in Israel are from foreign applicants, meaning most come from outside Israel.

Registration of a trademark in Israel is best secured by working with local attorneys.


5 Tips on How to Overcome Trademark Refusals in Israel

There are several types of refusals typicaly issued by the Israeli Trademark Office.

We have decided to share with you our 5 important tips on how to overcome a Trademark Refusal in Israel based on our extensive experience in Trademark prosecution.

This is a must read for every trademark attorney who files Trademarks in Israel. 

Beware of What You Write in Your Response – All Trademark Files in Israel are Public

Since 2015 all trademark files in Israel, covering most of the examination process of trademark applications, are public and can be viewed easily online by others.

It is very important to understand that any claim you claim to overcome any refusal may be held against the client, either by a certain competitor or by any other third party who can easily gain access to the online files. Make sure no confidential information is subbmited in your response.   

For example, if you agree to limit the protection of your application just to overcome a certain refusal your limitation can be used by any third party to block any claim of trademark infringement against him.

Your pleadings in the prosecution process might negatively affect your enforcement options. Therefore, we always recommend asking a local attorney to provide a short brief of the respond by bullet points in English.     

Do Not Respond Immediately to an Office Action – Wait and Consider All Options First

Our first instinct as trademark attorneys is to ask a local attorney to respond to an  office action before the deadline. It is very important to consider all options before you do so. Such option can be for example to wait until the other side has responded.

For example, once you receive a refusal (Office Action) in which your application cannot be registered based on similarity to other application that hasn’t been accepted yet, you might want to wait until the owner of the cited application has answered, to see his respond and then to decide on the proper course of action.

In that case you can wait until a few days before the deadline expires to review the other side’s response first. Reviewing the claims of the representatives for the cited application first, can provide you with material advantage in the process.

Ask the Local Attorney to Demonstrate the Use of the Mark using Online Information

In cases of lack of distinctive character refusals, trademark attorneys are confronting claims against the character of the mark. It is very important to show the examiners the actual use in the market using online information.  

In many cases we were able to prove that the mark is distinctive by showing the specific use in the market and how the specific use in the market acquires a special character to the mark. 

Use Foreign Registrations   

In cases of lack of distinctive character refusals, if your client has foreign registrations from his Country of Origin for the same mark and for the same list of goods, then you can use Section 16 of the Israeli Trademark Ordinance and request that the new application will be based on the foreign registration. By doing so you can efficiently overcome a lack of distinctive character refusal.

Ask the Local Attorney to Call the Examiner BEFORE Responding the Office Action

Experience shows that in many cases a quick chat with the Examiner can do miracles and can be even more efficient than an elaborated response.

We recommend in some of the cases to ask the local attorney to have a short chat with the Examiner, to understand his views and specifically ask him what you can provide in order to change his mind BEFORE submitting a detailed response.

While investing the time and energy in talking with the Examiner can be time consuming, it is very important to understand that if you fail to convince the Examiner, the second phase would be traveling to Jerusalem, attending the hearing and persuading the Trademark Registrar, this could be very costly for the client even before appealing the decision to the relevant District Court.                        

Yossi Sivan & Co. Law Office is specialized in Trademark Prosecution and litigation in Israel.




The above shall not be considered as any legal opinion whatsoever and we recommend consulting with a professional attorney.






New Israeli Supreme Court Decision on Trademark Infringement by Parallel import

Does parallel importat from Ukraine to Israel of beverages without the consent of the Israeli trademark owner which is a different owner from the Ukraine holder of rights,  constitute trademark infringement?  

The Israeli Supreme Court addressed this question in a unique judgment delivered by Judge Stein:

Let’s simplify it.

In the case of split ownership (different owners of the same mark in different countries), does the importation of the same products from country A to Israel under the same mark without the permission of the Israeli trademark holder constitute trademark infringement?   

Here are the Facts:

Yafora Ltd produces and markets soft drinks in Israel. Yafora Ltd owns the “Schweppes” trademark in Israel and in the territory of the Palestinian Authority.

In 2006, Yafora acquired the trademark “Schweppes” in Israel from Cadbury Schweppes PLC. “Schweppes” beverages, marketed by Yafora Ltd in Israel, are manufactured by Yafora in Israel.

Ben Shlush Ltd imports various products from abroad into Israel in a parallel import process. Products imported by a Ben Shlush include food and beverages.

The parlell import scheme can be presented as follows: 

On March 12, 2019, Ben Shlush Ltd imported the first shipment of beverage bottles with the “Schweppes” trademark, which they allegedly purchased from Supreme Trading LLC.

This company purchased the beverages from official resellers, who purchased them from the beverage manufacturer in Ukraine, European Refreshments Limited. Coca-Cola owns the rights to the “Schweppes” trademark in Ukraine through its subsidiary ERL.

Ben Shlush received a cease-and-desist letter from Yafora on April 29, 2019, stating that the marketing of Ukrainian beverages under the “Schweppes” trademark infringes on Yafora’s Israeli trademark registration “Schweppes”.

In light of the above, Ben Shlush filed a motion for a declaratory judgment asking the District Court to declare that Schweppes’ beverages imported from Ukraine, which were purchased from ERL, were lawful and did not infringe on Yafora’s Israeli trademark “Schweppes”.

The District Court Decision  

On October 19, 2020 the District Court has accepted the motion for a declaratory judgment and ruled that the fact that Yipora manufactures its products in Israel and does not import them to Israel from abroad does not deprive Ben Shlush of the status of a legitimate parallel importer.

In this context, it was pointed out that a certain difference between the products, those of the owner of the trademark rights and those imported in parallel import from another country, does not detract from their originality for the purpose of protecting the parallel import, whenever the product manufacturer holds the trademark rights in that country.

Along with this legal determination in principle, it was determined that Yafora in any case did not prove to the required extent its factual claim regarding the difference between the products.

Split Ownership of the Same Brand

The district court ruled that the legal doctrine concerning the exhaustion of intellectual property rights also applies in situations of territorial split ownership of trademark rights.

In this context, the district court has argued that the parallel import was a commercial risk that Yafora had to consider while acquiring the rights to the “Schweppes” trademark from Cadbury – in view of its awareness of the territorial, voluntary and agreed split of the Schweppes trademark rights.

The District Court ruled that this split of ownership was made when Cadbury sold its rights to various entities in different countries.

Accordingly, the District Court has awarded Ben Shlush with a declaratory judgment in which Ben Shlush is entitled to import the products purchased by ERL under the “Schweppes” trademark and that it is not considered to be a trademark infringement.

Yafora has filed an appeal to the Israeli Supreme Court.     

The Supreme Court Decision:

Judge Stein has decided to accept the appeal together with Judge Elron, against the minority opinion of Judge Hendle.     

Majority Opinion (Judge Stein)

The Court has ruled that the basic mistake that the district court made was to attribute a notion of internationality to the Israeli trademark “Schwepps” and its affiliation with the global “Schweppes” brand, which in fact does not exist. It is a fact that the trademark “Schweppes” is no longer associated with Cadbury, which at the time sold it to Yafora.  

Second, and this is the point: a trademark – “Schweppes” in this case, is limited to the borders of the state in which it is registered and gives its owners exclusive territorial rights, as opposed to extra-territorial rights unrelated to the local mark. Thus, the trademarks of “Schweppes” that have been registered and recognized in countries outside Israel are not relevant at all – this is because their scope is essentially limited to the borders of each country and its laws.

When Cadbury controlled 50 or 100 Schweppes trademarks in 50 or 100 different countries – even then it did not hold any international-global trademark, but fifty (or one hundred) different local trademarks, that were distinct from each other and unrelated to each other.

This basic principle will be hereinafter referred to as the principle of territorial protection for trademarks or, in short, the principle of territorial protection.

The principle of territorial protection and the exclusive right that Yipora has in the marketing and distribution of “Schweppes” products in Israel, lead the court to the following conclusion: Such importation shall violate Yafora’s exclusive trademark rights, will harm the ability of consumers in Israel who wish to buy Yafora’s Schweppes’ products, , and will lead to the erosion of Yafora’s incentive to invest in the quality of “Schweppes” products that are sold in Israel.

The Supreme Court then continued to define what is considered to be a legitimate Parallel Import in Israel:

Parallel import is a legitimate commercial practice whenever it respects and does not infringe on the existing trademark regime. Parallel or other imports that infringe the rights of the trademark owner in his own country are illegitimate and shall not be permitted.

In this case, in the absence of a contractual relationship between Yafora and the rights holder of the “Schweppes” trademark in Ukraine, there is no basis for claiming that the sale of the products by the Ukrainian manufacturer – between them and Yafora products – exhausts Yafora’s rights in Israel.

The Yafora company exercises its trademark rights only when it sells its own beverages under the “Schweppes” brand – and this, of course, only in relation to the beverages it has sold and received in return. These drinks – and only they – can be put up for further sale in Israel without infringing Yafora’s trademark. The Ukrainian brand bearing the “Schweppes” mark is not related to the Israeli brand which is identified with Yafora through the trademark “Schweppes” owns by Yafora. Therefore, the Ben Shlush “Schweppes” drinks imported to Israel are considered as infringing goods.

Minority Opinion

Judge Hendler presented a different opinion.

In his opinion the use of the mark “Schweppes” by Ben Shlush should be considered as “true use” of the mark in accordance with section 47 of the trademark ordinance. Judge Hendler contended that the use of the “Schweppes” mark on the bottles, even though they were produced by the rights holder in Ukraine and not in Israel, provides real and valuable information for the consumer about the brand.

In his opinion, the legally split of ownership did not change the reputation of the “Schweppes” brand in the eyes of the consumers. The Schweppes bottles enjoyed the reputation of “Schweppes” prior to the transfer of ownership, and the reputation of “Schweppes” continues to accompany them. This is therefore a true use of the “Schweppes” mark.

Judge Hendler continued and explain his opinion that marketing the imported bottles as ” Schweppes ” should considered as true use of that mark. The reason for this is not because in Ukraine the use of the mark was lawful, nor because the name of the rights holder in Ukraine (or his predecessor) was indeed “Schweppes”. The reason is that both the rights holder in Ukraine and Yafora both acquired rights in the same mark with an international reputation. In such a case the mark “Schweppes” on the imported bottles contains the correct information about the same brand.

In view of this conclusion, Judge Hendler continued to evaluate whether such import may cause confusion in the market. In his opinion, the consumers probably did not know that there are two ” Schweppes ” manufacturers operating in Israel that are not currently legally related to each other.

There is also no guarantee, in these circumstances, that the taste or composition of the imported beverages is the same as some of the beverages produced by Yafora, or that such an identity will be preserved in the future.

Although the back of the bottles contains data about the manufacturer, it is highly doubtful whether this caption allows the consumer to know effectively about the existence of two different and independent manufacturers who legally use the “Schweppes” mark.

In these circumstances, and since Yafora produces its beverages independently, it was decided by Judge Hendler that the marketing of the bottles as they are, eventually  does not meet the criteria of “true use”, in view of the likelihood of market confusion test.

Nevertheless, Judge Hendler believes that this difficulty can be overcome by affixing a “Disclaimer” sticker to the front of the imported bottles, in a prominent place and adjacent to the “Schweppes” trademark.

The sticker must make it clear enough that the drink is produced by the rights holder in Ukraine, and that the taste of the drink may be different from that produced in Israel by the trademark holder in Israel. Judge Hendler believed that such a disclaimer should overcome the confusion test.

Judge Stein objected to Judge Hendler’s view. In his opinion the Court should not provide legal guidance to the defendant. Judge Stein sees no reason to give Ben Shlush legal advice regarding its future operations in the Israeli soft drink market. In his opinion, giving such advice is not part of the judicial role.                


The Supreme Court has decided to accept the appeal in accordance with the majority opinion of Judge Stein and Judge Elron who agreed with Judge Stein.

The Supreme Court decided to set aside the district court’s ruling and award a declaratory judgment which states that Ben Shlush is not allowed to import products made in Ukraine bearing the trademark “Schweppes” without the permission of Yafora.

The Supreme Court has also ordered Ben Shlush to pay Yafora legal expenses in both instances in the total amount of NIS 70,000.

This new decision materially limits the scope of legitimate parallel imports in Israel and define the legal ruling for a situation of a split ownership of same brand by unaffiliated companies in different countries.     

Our estimation is that an additional hearing will be requested by Ben Shlush since this decision could potentially have a major influence on the parallel import market in Israel.

Disclaimer: Nothing in the above constitutes any legal opinion whatsoever and the user is required to get a professional legal consultation.       

TM Opposition

Israel : What is the Level of Similarity Needed to Win a Trademark Opposition?

In Israel, third parties can oppose the registration of a trademark within three months of publication by filing a trademark opposition against the requested mark. The mark will proceed to registration if no opposition is filed.

The opposer must prove that there is a likelihood of confusion between the requested mark and the opposer’s mark in order to win a trademark opposition.

To pass that bar, what level of similarity is required?

Based on reviewing several trademark opposition decisions rendered in Israel for the past two years, we have noticed that to win a trademark opposition in Israel, the opposer must show a substantial likelihood of confusion.

Even a strong similarity may not suffice. Compared to trademark systems in other countries, the standard of similarity is quite high. 

Furthermore, the Legal Expenses usually ruled by the Trademark Registrar are minimal and don’t cover the actual legal expenses the opposer has to pay during the opposition process.

The Legal Expenses usually ruled by the Trademark Registrar are minimal and don’t cover the actual legal expenses

Therefore, before filing an opposition to a trademark in Israel, it is recommended to assess the chances of success.

The table below shows the surprising results of several trademark opposition proceedings over the past two years.

Would the following oppositions be acceptable in your country? Let us know what you think.  Contact Us. 


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Is There a Likelihood of Confusion Between EZ and EZ PUT?

We are thrilled to share with you the fantastic victory our firm achieved in a recent trademark opposition case. The case centered on the use of a rapper’s merchandise in connection with his trademark, and whether it constituted use beyond his music services.

Our client, EZ PUT, a company specializing in mobile phone accessories, had their trademark application opposed by Israeli rapper, EZ, who claimed that the mark was too similar to his own, well-known mark in the music services category. EZ argued that his sales of shirts and hats with his trademark should broaden the protection of his mark.

However, EZ PUT countered that there was no likelihood of confusion between the two marks, citing differences in design, style, and meaning. They also contested that EZ’s trademark was not widely known and that the sale of fashion merchandise did not constitute valid trademark use outside of music services.

The TM Registrar ultimately dismissed the opposition, fully accepting EZ PUT’s arguments, including their use of the merchandise claim. As the Registrar noted, the purchase of a shirt with a band’s name is not meant to convey the quality or origin of the shirt, but to express the wearer’s musical preferences and cultural identity.

Our client was expertly represented by Yossi Sivan – Law Firm, and we are honored to have been a part of this successful outcome.


Representing Successfully Beverly Hills Polo Club Internatioanl Fashion Brand in a Trademark Case

Adv. Sivan has represented successfully the famous American brand BEVERLY HILLS POLO CLUB in a case of alleged trademark infringement and passing of against two different local importers concerning two different confusingly similar marks.

The District Court of Tel aviv has issued a Temporary injunction against the importers and eventually the case was settled in favor of BEVERLY HILLS POLO CLUB, in which a permanent injunction was granted, with no need of managing separate opposition procedures.